How to stop competitor from using company name and logo in advertising?

We recently discovered that over the last month, a direct competitor is negatively using the name of our company and our logos in its advertisements and marketing materials without our permission. We want them to stop using our name and logo altogether. What can we do to stop our competitor and possibly seek damages?


Copyright Questions

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Litigation Law Questions

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Trademark Questions

in California Posted 6 years, 6 months ago

11 Responses

Profile Picture of Dustin Manwaring
Dustin Manwaring

Attorney at Milestone Law Firm

The answer does not just depend on trademark registration, which can be relevant for determining what legal burden exists and what remedies are available, but is mostly about whether your competition is deceiving the consumer. It is simply not good enough to say they are using your name and logo. Comparative advertising is encouraged in the U.S., but must be done with caution so as to not "piggyback" on someone else's intellectual property and goodwill. The Federal Trade Commission (FTC) for example, encourages comparative advertising because of the inherent benefits in educating consumers. That said, if someone is using your name and logo to confuse consumers rather than to compare services, or is making untruthful statements about your company, you may have valid claims of trademark infringement, unfair competition, libel/slander, as well as others depending on your jurisdiction. The starting point would be a well-crafted demand letter to give the competitor time to stop, followed by a suit for injunctive relief and damages, if necessary. But be sure that the use of your name and logo rise to more than a comparison of services before you spend money trying to get them to stop. You need to find an experienced trademark lawyer in your state that can go through a factual analysis with you and analyze the specific merits of your claim(s).

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Profile Picture of John R Crossan
John R Crossan

Attorney and Founder, Sole Member at Crossan IP Law, LLC

If the competitor is passing their goods or services off as yours, file a federal lawsuit under the Lanham Act for common law trademark infringement, and seek a temporary restraining order and a preliminary injunction. Act quickly, as you'll lose your right to an injunction if you let the confusion and infringement persist for too long. If they are simply using your name etc. in a comparative way, without causing confusion, and what they say is true (X's polish turns your fingers black, but ours does not) then you'll just have to live with it. If what they say is not true the you have a false advertising claim, which the FTC or a state agency can perhaps deal with quickly.

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Profile Picture of Matthew Lorch
Matthew Lorch

Attorney - Owner at Lorch Law Office LLC

You will need to investigate your own copyright/trademark registration status in any applicable state and national jurisdiction first (not clear from facts submitted) before you know what rights you have. In my jurisdiction(s) of a metro area across two states, you can have two companies with the same copyrighted name but each rightfully registered in its own neighboring state and operating on different ends of the same metropolitan area. After verification, I would send a cease and desist letter. If demands to desist were not met, I would initiate a petition for injunctive relief and complaint for damages. If the issue still remains contested, the court will then examine a variety of factors to decide the outcome and any potential damages. There is little more analysis which can be done from the facts as presented. Analysis may also change depending on whether the opposing party was representing itself out to the public as being the same identity as your company versus whether the opposing party just referenced your company in its advertising materials. This advice is not intended to be relied upon and would require additional consultation as to specific jurisdiction(s) and additional background information.

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Profile Picture of Maxwell Felsheim
Maxwell Felsheim

Attorney at Hellmuth & Johnson

As stated in Mr. Lorch's comment, your plan of action would heavily depend on the trademark (not copyright) registration status of both your name/logo and the way in which your competitor is using the name/logo. Even without federal trademark registration you may be able to enforce your rights under common law, however it will depend on many factors not included in your post (i.e. date of first use, what jurisdiction you are in etc.).

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Profile Picture of John R Crossan
John R Crossan

Attorney and Founder, Sole Member at Crossan IP Law, LLC

As my colleagues note, companies may use names and logos of competitors only nominatively and non-confusingly to point out differences or advantages, but they may not cause confusion as to source of goods or services provided by each company. If the ads and marketing materials likely make consumers confused as between your company and theirs and induce the customers to buy their product or service mistakenly instead of yours, you have a Lanham Act complaint and can go to federal court to enforce your rights. A temporrary restraining order may be available if you have given notice and they have not stopped, whether or not your marks and logos are federally registered. Contact qualified TM counsel immediately, in your locale or even in theirs, to protect your rights in your marks and stop this infringement, if it is, very promptly. Best wishes.

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Profile Picture of Albert B. Maggio, Jr.
Albert B. Maggio, Jr.

Of Counsel at CRGO Law

You may retain counsel to send them a cease and desist letter. If the marks are registered you should attach copies of the registration to the letter. If the company does not respond, you may consider bringing legal action.

If your use your company name and logos as trademarks (whether they are registered or not) you may retain counsel to file a complaint in the appropriate court of competent jurisdiction and seek a temporary restraining order (pending the outcome of the underlying lawsuit) to bar them from continuing to use your intellectual property.

If your marks are registered, you may be entitled to statutory damages and attorneys fees.

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Profile Picture of William Glover

William Glover

If you have registered your name and/or logo as a trademark, you have the remedies provided by the US Patent and Trademark Laws. See http://www.bitlaw.com. If you have not registered them, you may still have common law protection and and can still sue. In either case the cause of action would be for infringement. Also, you seem to have a good case for "unfair competition" since your competitor is apparently trying to deceive the public.

Profile Picture of Paul Minoletti
Paul Minoletti

Attorney at Law at Law Offices Paul G. Minoletti

First step is to send a "cease and desist" letter

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Profile Picture of michael shimokaji
michael shimokaji

Partner at access ip group

Send them a letter asking if they want to license your trademark for a fee. If not, proceed to file a lawsuit with a contingency fee lawyer and then continue to negotiate a settlement.

www.accessipgroup.com

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Profile Picture of Paul Minoletti
Paul Minoletti

Attorney at Law at Law Offices Paul G. Minoletti

You will need to file suit and seek an injunction

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Profile Picture of John R Crossan
John R Crossan

Attorney and Founder, Sole Member at Crossan IP Law, LLC

Non-confusing, accurate, "nominative" use of your name and trademark is permitted, for the benefit of consumers. "Better gas mileage than the Ford Taurus" is OK for selling Chevy Volts, for instance, if that is true. Using your name in keywords, metatags, and such may also be permitted if certain fair use standards are met. If standards are not met and the advertising is unfair, a federal Lanham Act claim can be brought to stop the infringement on your name and mark. Let me know the marks and uses and I can advise further. Thank you.

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